Lapas attēli
PDF
ePub

11

12

13

14

"SEC. 4904. (a) Whenever an application is made for a patent which in the opinion of the Commissioner claims any subject matter disclosed in any prior filed pending application or in any unexpired patent issued upon a prior filed 15 application not more than one year before the filing of the later application, he shall reject the claim or claims which are readable upon such patent or on such prior filed unpat18 ented application.

16

17

19 20

"(b) Thereupon the applicant so rejected shall have access to the prior filed application and shall have the right, 21 within a time to be fixed by the Commissioner, to ask a 22 reconsideration of such rejection. If such rejection is ad23 hered to, the rejected applicant shall have the option of 24 appealing from such rejection, or of asking an administrative 25 award as herein provided.

2222222

1.

3

"(c) If the rejected applicant shall elect to appeal, he 2 will thereafter be forever barred from asserting priority of 3 invention over any senior application or patent upon which his claims have been rejected.

4

5

7

8

9

"(d) If the rejected applicant shall, within a time to be 6 specified by the Commissioner, ask for an administrative award of priority, then the Commissioner shall send a notice to all parties specifying the claims under rejection and stating that within a time specified, not less than twenty days there10 after, any party may file in the Patent Office such proofs, 11 not requiring testimony, as he may see fit, which tend to 12 establish who is the prior inventor of the subject matter 13 of the rejected claims, that within such specified time any 14 interested party may copy any of the rejected claims and 15 may call attention to any reference to the prior art which 16 he may consider pertinent. At the same time, any party may file a written memorandum as to the pertinence of any 18 proofs so filed and as to pertinence of any prior art so cited. 19 "(e) Thereupon, without any hearing or oral argu20 ment, the Board of Appeals shall render its decision, first as to the patentability of any of the rejected claims which are questioned and, second, making an administrative award as to which party on the showing so made appears to have 24 the better claim to priority of invention.

17

21

22

2223

4

"(f) From any holding of nonpatentability of any claim or claims, the usual ex parte appeals will lie.

"(g) For the purpose of further proceedings hereunder 4 the party in whose favor such administrative award shall be rendered shall be considered the senior party.

12345678

10

11 12

"(h) Within three months from the rendering of any 7 administrative award, any party who is held by such award not to be the senior inventor, may file a complaint under 9 section 4915 to have the question of priority adjudicated. "(i) In any such priority proceedings the administrative award shall only have the effect of determining which party or parties is entitled to file a complaint under section 4915, 13 but there shall be no presumption in favor of the correctness 14 of the administrative award except that in the absence of any 15 proceeding under section 4915 or in the absence of proofs 16 tending to support any complaint filed under section 4915, 17 such administrative award shall authorize the grant of a 18 patent to the party in whose favor it is rendered.

20

21

19 "(j) In case of rejection of two or more applications upon the disclosure of the same prior filed application, and the filing of a complaint under section 4915 as herein author22 ized, the Commissioner shall notify all junior parties who 23 then shall have the right to proceed under section 4915, 24 of the filing of said complaint, with adequate information 25 identifying such suit. Thereupon any other junior party,

5

who has not forfeited his right to proceed under section 4915, may, upon motion and for cause shown and at the discretion 3 of the court, intervene in said suit by filing its complaint 4 therein as authorized by section 4915.

1234567890;

"(k) The grant of a patent to the applicant in whose 6 favor such administrative award has been made shall not be withheld, suspended, or delayed because of the pendency of any priority proceedings.

"(1) If any defendant in any priority proceedings is or at any time prior to the termination of the priority pro11 ceedings becomes a patentee of the subject matter in con12 troversy and is adjudged to be in fact the prior inventor 13 thereof, he may if he elects, by suitable supplemental pro14 ceedings, have adjudicated any question of infringement of 15 his patent by any manufacture, use, or sale of his patented 16 invention by any junior party.

17

"(m) The district court of the United States for the 18 district wherein the senior party is an inhabitant and the 19 District Court of the United States for the District of Colum20 bia shall have jurisdiction of suits under this statute. If it 21 shall appear that an adverse party resides in a foreign coun22 try, or adverse parties reside in a plurality of districts not 23 embraced within the same State, then the District Court of 24 the United States for the District of Columbia shall have

6

1 jurisdiction thereof and, unless the adverse party or parties

3

4

2 voluntarily make appearance, writs shall be issued against all adverse parties with the force and effect and in the manner set forth in section 52 of the Judicial Code (U. S. C., 5 1940 edition, title 28, sec. 113). Writs issued against 6 parties residing in foreign countries pursuant to this section 7 shall be served by publication or otherwise as the court 8 shall direct.

9

10

11

"Whenever priority is determined by the court pursuant to this section, such determination shall be conclusive for all purposes in the absence of additional evidence in any litiga12 tion involving any party who was not a party to the pro13 ceeding under section 4915 which the court shall find con14 clusive to the contrary."

15

SEC. 3. Section 4911 of the Revised Statutes, as amended (U. S. C., 1940 edition, title 35, sec, 59a), is 17 amended to read as follows:

16

18

"SEC. 4911. If any applicant is dissatisfied with the 19 decision of the Board of Appeals, he may appeal to the 20 United States Court of Customs and Patent Appeals."

21

SEC. 4. Section 4915 of the Revised Statutes, as amended 22 (U. S. C., 1940 edition, title 35, sec. 63), is amended to 23 read as follows:

24

25

1

3

"SEC. 4915. (a) Whenever a patent on application is refused by the Commissioner of Patents or wherever an

7

administrative award is rendered adverse to an applicant, 2 such applicant, unless an appeal has been taken to the Board of Appeals from a rejection as provided in section 4904, in 4 which case no action may be brought under this section, may 5 have remedy by a complaint if filed within three months 6 after such refusal; and the court having cognizance thereof, on notice to adverse parties and other due proceedings had, 8 may adjudge that such applicant is entitled according to law 9 to receive a patent for his invention as specified in his claim or for any part thereof as the facts in the case may appear, and such adjudication, if it be in favor of the right of applicant, 12 shall authorize the Commissioner to issue such patent on the

7

10

11

19

13 applicant filing in the Patent Office a copy of the adjudication
14 and otherwise complying with the requirements of law. In
15 all cases a copy of the bill shall be served on the Commissioner
16 within ten days of the filing of the complaint and where there
17 is no opposing party all the expenses of the proceedings shall
18 be paid by the applicant whether the final decision is in his
favor or not. In all suits brought hereunder where an
20 administrative award has been entered by the Board of
21 Appeals, such administrative award shall be controlling on
22 the court in the absence of proofs in support of the complaint.
23 "(b) Upon the filing of a complaint in the District
24 Court of the United States for the District of Columbia
25 where remedy is sought under this section or section 4918,

1

2

4

6

8

without seeking other remedy, if it shall appear that there is an adverse party residing in a foreign country, or adverse 3 parties residing in a plurality of districts not embraced within the same State, the court shall have jurisdiction thereof and 5 writs shall, unless the adverse party or parties voluntarily make appearance, be issued against all of the adverse parties 7 with the force and effect and in the manner set forth in 8 section 52 of the Judicial Code (U. S. C., 1940 edition, title 9 28, sec. 113). Writs issued against parties residing in for10 eign countries pursuant to this section may be served by 11 publication or otherwise as the court shall direct.

12

13

"(c) Whenever one or more applicants for patents who are not parties to any original proceeding hereunder shall 14 file complaints asking that they may be made parties to 15 such proceeding the court shall have jurisdiction upon good 16 cause shown and at the court's discretion to permit such 17 parties to intervene in such litigation."

18

SEC. 5. On and after the date of enactment of this 19 Act no interference shall be declared by the Commissioner 20 of Patents, and neither the Patent Office nor any court on 21 appeal from the Patent Office shall have jurisdiction to hear or determine any interference or priority proceeding except where an interference has been declared prior to the passage 24 and approval of this Act. As to all such cases where an 25 interference has been declared, the Patent Office and the

22
23

1

9

courts on appeal from the Patent Office or in any proceeding

2 thereunder, shall, only as to interference proceedings then

3 pending, have and exercise the same jurisdiction and powers

4

which they respectively had prior to the passage and 5 approval hereof.

Mr. LANHAM. The committee will be in order..

The chairman, Representative Boykin, is absent from the city and he asked me to preside at this hearing.

Representative Church, formerly a member of this committee, has requested a hearing on H. R. 3264, which the chairman of the committee granted and set today for the hearing.

I understand from Mr. Church that it is his desire for Mr. Otto Barnett to make the opening statement in explanation of the bill. Mr. CHURCH. That is right.

Mr. LANHAM. Do you have any preliminary statement to make? Mr. CHURCH. I would rather waive the time in order to give the witnesses a better opportunity to make their statements.

Mr. LANHAM. We will call the first witness, Otto R. Barnett, of Chicago, Ill.

STATEMENT OF OTTO R. BARNETT, CHICAGO, ILL.

Mr. BARNETT. I have prepared a statement, which if I read I will be perhaps exhausting as well as exhaustive. But if I may, I will put this statement in the record and I will read excerpts that will explain the bill.

Mr. LANHAM. It will be placed in the record.1

Mr. BARNETT. I am a member of the firm of Barnett & Truman, 2300 Board of Trade Building, Chicago, Ill. I have been in active practice for over 50 years, specializing, but not limiting myself, to the practice of patent law.

In that period I have been president of the Chicago Patent Law Association and the American Patent Law Association and chairman of the section on patents, trade-marks, and copyrights of the American Bar Association.

Also, I have been an instructor in patent law at Northwestern University law school.

During that period I have taken active part in the work of many committees on changes in the patent law and have appeared before the Patent Committees of the House of Representatives and of the United States Senate in connection with numerous measures, some of which have been enacted into law.

H. R. 3264 is designed to remove from the Patent Office all contests between rival claimants as to which is the one lawfully entitled to receive a patent for an invention for which both applicants seek a patent. Such a contest is at present termed an interference.

In other words, we are recognizing the fundamental public interest under our patent system, in having a patent issue and disclose new invention as soon as possible and then expire promptly, instead of being delayed for years by these contests as is presently the case.

Under the provisions of this bill, after the Patent Office has summarily determined which of rival claimants has made the most convincing showing as to priority of invention, his application shall proceed ex parte as if there were no challenge of his right of priority, so that a patent may issue and expire without any delay incident to any contest as to priority.

In the meanwhile any rival claimant may within a limited period seek a judicial determination of the question of priority by proceeding in a Federal court under Revised Statute 4915.

Under the present method we have Revised Statute 4915 which you can invoke after you have gone through the long proceedings and interferences in the Patent Office and not amended in the Patent Office. That in brief is the substance of this bill.

An outstanding fault in our patent system, probably the outstanding fault in the issuance of patents, has been the matter of delay incident to adjudicating so-called interferences.

Various amendments of the law have largely overcome delays in the issuance of patents in other respects.

An interference is really a contest between rival claimants for a patent for the same invention.

Such a contest is not initiated by any applicant. The Commissioner of Patents, who has the duty of determining patentable novelty disclosed by a patent application, declares an interference when he finds that two or more applicants or an applicant and a patentee of

1 Portions of statement not read or delivered orally are incorporated in the oral statement.

a patent granted within a certain limited period before the conflicting application was filed, are seeking to obtain a patent for the same invention.

It is initiated by the Commissioner only after he has decided that the subject matter is entitled to be patented, but this interference is to determine which one of two rivals should get the award. But for either, the other would get it. Each of the rivals seeks to prevent the award from going to the other, and thus getting it for himself. Practice shows that where one suspects that he will be the loser, he strives to prevent the other from getting it. That practice is the bane of the profession.

When an interference is declared there is open to the parties involved various interlocutory proceedings and technical motions whereby the issuance of a patent to either of the parties may be prolonged for an unconscionable period.

These proceedings are largely efforts to defeat the other's right to the patent; a right which would have matured had not the rightful party been blocked by the other.

One outstanding fault of this system is that an applicant who shortly learns that he has no chance of succeeding on the issue of priority may, nevertheless, by these interlocutory proceedings and appeals, postpone the grant of a patent to the other party and to put him to such expense that it has often happened that the rightful applicant will buy out the other party or will grant him certain rights under the invention to which he is not entitled. Such a settlement is often made as the best and cheapest way out of a contest which would otherwise delay the grant of a patent for years and involve heavy expense.

An interference ignores that it is to the public interest that a patent shall issue as promptly as a fair examination as to patentable novelty will permit. Not only does the early grant of a patent speed the time when, upon its expiration, the patented invention shall be free to the public, but its disclosures frequently stimulate other inventors to devise improved or alternative means for accomplishing the same result and thus provide potential competition and further improvements of which the public sooner or later become the beneficiary. That delay incident to interferences is no new situation. It is a condition that has existed for years.

The outstanding delay with which I was connected involved a delay of 15 years from the time we filed the application until we got the patent. For all those 15 years we were fighting hard to get the patent out but we are just tied up in one interference after another.

This is no new situation.

In May 1905 Mr. Justice Duell, speaking for the Court of Appeals for the District of Columbia, in Allen v. Lowry (116 O. G. 2253), made the following comment regarding the interference practice in the Patent Office:

From the simple and summary mode first adopted for determining the question of priority of invention, that proceeding, by system of Patent Office rules, has grown to be a veritable old man of the sea, and the unfortunate inventor who becomes involved therein is a second Sinbad the sailor. It is known to all who are familiar with the practice in interference proceedings that by motions, petitions, and appeals of every conceivable character that the ingenuity of the skilled attorney can devise, interferences can be and are prolonged for years, to the injury of the public and often to the financial ruin of the parties.

« iepriekšējāTurpināt »